planning

Q1. If a design application is to be filed in Japan claiming
Convention Priority based on a non-Japanese application, is the priority period
one year as in patent applications?

A1.No. For filing design
applications in Japan claiming Convention priority, the priority period is for six (6) months, instead of one year,
from the filing of the priority application. Even if you have a design "patent" application filed at the USPTO, the priority period is 6 months for filing a Japanese patent application with a valid priority claim based on the degisn "patent" application filed in the US.

You also have to be careful when filing a
patent application in Japan claiming priority from both a patent
application and a design application.
That is, for example, if you filed in your country a patent application
on May 1, 2012 and a design application on October 30, 2012 and are now considering filing a patent application on May 1, 2013 in Japan claiming
priority from both of the above-mentioned patent application and design
application filed in your country, this date “May 1, 2013” is within one-year
priority period based on the patent application but is after the expiration of six-month
priority period (October 30, 2012 + 6 months = April 40, 2013) based on the design
application. Therefore, the priority
claim based on the design application is not valid.

Q2. I am planning to file a design patent
application in Japan claiming priority from a US design patent application. What are the major differences in practice between
the United
States and Japan that require particular attention?

A2. Firstly, unlike the “design patent” in the United States which is one type of patents and is basically dealt with under the
patent law, Japan has a design law separate from a patent law.

Therefore, in Japan, an
application for registration of a design is referred to as “design application”,
not “design patent application” as
in the United States.

More importantly, this difference in legal system leads to some significant differences in design registration practice between the US and Japan representative examples of which are enumerated below.

Difference 1) “Single design per
application” system in Japan

It is understood that the US system
allows an applicant to pursue two or more designs (embodiments) of a single
inventive concept in a single design patent application. This, however, is not the case in Japan. According to the Japanese practice, each design
application may include only a single
design of single shape.

Therefore, in Japan,
when a single priority application includes multiple designs, it is necessary
to either:

- file separate design
applications with respect to the different designs, or

- file an application including different designs and later file a divisional application(s).

In this connection, however, it should be noted that it is not
allowed to file a divisional application on a “partial” design from a “whole”
design application and vice versa.
Concerning the “partial” and “whole” designs, explanations are made
below.

Further, there is an exception to the "single design per application" system, and the Japan's Design Law provides "related design" system for covering a plurality of similar designs.

1-1) Exception to the “single
design per application” rule

The Japan’s Design Law exceptionally allows for discrete objects to
be claimed in a single application if common sense indicates that such discrete
objects are usually sold as a “set”,
as in the case of, for example, a 3-piece set including a knife, fork and spoon.

1-2) Related design
applications

In the case where the priority US
application contains a plurality of different but similar designs (e.g., minor variations of a certain design), such
similar designs may be covered by utilizing the related design system in Japan. Specifically, the similar designs can be
covered by filing a principal design
application and filing a related design
application(s) by one day prior to the publication of the principal
design.

The design registered as the related design can be enforced independently of the registered
principal design and other registered related design(s). That is, a related design right can cover even
a design similar to that related design, which, however, is not similar to the
principal design.

For covering such similar designs under the related design regime, it
is possible to either:

- file a principal design application and also
file a related design application(s)
simultaneously with the principal application or later (by one day prior to the
publication of the principal design at the latest), or

- file general design
applications on the similar designs, and later amend the general applications
into a principal design application and a related design application(s).

The JPO may find that the designs are not similar enough to be
eligible for registration under the related design regime but there is no need
to be so nervous about this point. If
the JPO denies the similarity, the JPO will issue an office action requesting
the applicant to stop relying on the related design system and change the
applications to normal applications.

Finally, the right of a registered
related design is independent from the right of a registered principal design but there are the following exceptions.

1. Synchronized
protection term:

The protection term for
both of a registered principal design and a registered related design is 20
years from the registration date of the principal design. This point, however, is substantially
immaterial in the present case because the two applications will probably be
registered almost simultaneously. Further,
the registered related design can be maintained even if the principal design is
allowed to lapse due to non-payment of maintenance fee, and vice versa.

2.
Restriction of transfer of rights and
licensing:

The right of a registered
related design cannot be transferred or licensed independently from the
registered principal design. That is, for
transfer of design rights to a third party by assignment etc., the principal
and related designs must be simultaneously transferred together to the same entity. Further, also for licensing,
the principal and related designs must be licensed simultaneously to the same entity.

Difference 2) Partial Design System

The Japan’s Design Law has a “partial design system” which allows
registration of parts of shapes or forms with distinct characteristics.

The US system also provides a similar practice where dotted lines can be
used to indicate non-claimed parts. There
is, however, one important difference. That
is, the Japan’s system requires that a partial design application should be filed
with a clear indication that the application
claims a partial design. In the absence of such indication, the
application will be recognized as claiming a whole design.

Once filed with the indication of a partial design application, it
is in principle not allowed to amend the application into a whole design
application and vice versa. Similarly, a
divisional application on a partial design cannot be filed from a whole design
application and vice versa.

Therefore, if it is important to cover both of whole
and partial designs, it is recommended to file both a whole design application
and a partial design application.

Of course, there are many other differences between US and Japanese practices; however, the above differences are believed to be the main differences which require particular attention when filing a design application in Japan claiminig priority from a US design patent application.

Q1. If a trademark application is
to be filed in Japan claiming Convention Priority based on a non-Japanese
application, is the priority period one year as in patent applications?

A1.No. For filing a trademark application in Japan
claiming Convention priority, the priority period is six (6) months, instead of one year, from the filing of the
priority application.

Q2. Are
there any specific points to be noted for registering a trademark in Japan?

A2. Some of the points to be noted for
registering a trademark in Japan are as follows.

(1) Goods and services acceptable in Japan: In the case of trademark registration in Japan via Madrid protocol, the JPO may object to the indications of goods/services in the International Register as being too vague even if they should be acceptable under the NICE Agreement. This is because the JPO relies on its own list of goods and
services as prescribed in the examination standards. For
example, “Apparatus for locomotion by land, air or water” found in the NICE Classifications is not found acceptable by the JPO, and it should be
amended to “Aircraft; automobiles; bicycles; motorcycles; rolling stock for
railways; ships”. The amendment of indications
is possible as long as it is within the scope of the original Madrid protocol application.

(2) Requirement for use of trademark: A
registrable trademark in Japan is a trademark which is being used or which is intended to be used in the near future. When the range of the goods and services
listed in one class is too broad, the trademark will be rejected because the veracity
of use or intention of use of the trademark becomes doubtful.

(3) Registrable subject matter: Currently, sounds, smells, colors, textures,
tastes and movements are not registerable as trademarks in Japan. (However, the JPO is planning to submit a bill to revise the trademark law to the Japanese Diet in
2013. So, registration of the mentioned subjects as trademarks may become possible in the near future.)

Q3. Are there any means to accelerate examination of a trademark application in Japan?

A3.Yes. A request for accelerated
examination can be filed anytime after the filing of your trademark application, and the request should be granted as long as the following condition 1 or 2 is met .

Condition 1 : Actual use of trademark and need for quick registration

You or your licensee is already using your trademark for the goods or services designated in your application,
or are preparing to use the trademark, AND

The trademark rights need to be granted
urgently due to any one or more of the following reasons:

1)
A third party is using a trademark which is the same or similar to your trademark without authorization from you or your licensee, in connection
with designated goods or services that are the same or similar to the goods and
services for which you or your licensee has been using the trademark, or
for which you or your licensee has prepared to a considerable degree to use the trademark.

2) A third party has given a warning with respect to the use of your trademark.

3)
A third party is demanding an agreement to their use of your trademark.

4)
You have also applied for the trademark registration at a Patent Office other
than the Japan Patent Office (JPO), or to an intergovernmental organization.

Condition 2: Use of trademark only for designated goods or services

Your application designates only the goods and services for which you or your licensee is already using the trademark or you or your licensee is preparing to use the trademark.

Q4. What are the documents necessary
for filing a request for accelerated examination for a trademark application in
Japan?

A4. A
document entitled "Explanation of the Circumstances Concerning Accelerated
Examination” should be filed together with evidence(s) showing that the
above-mentioned Condition 1 or 2 is fulfilled by the trademark application.

Q5. What are the specifics of the individual fee system for a trademark registration via Madrid Protocol designating Japan.

A5. The JPO has adopted an individual fee
consisting of two parts in accordance with Rule 34(3)(a) of the Common Regulations
under the Madrid Protocol.

First part of the individual fee: This corresponds to an application
fee, and is paid at the time of international registration or the subsequent designation.

Second part of the individual fee: This corresponds to a registration
fee, and is paid within the prescribed period mentioned in the notification issued
with the Notice of Grant. Failure of payment
results in cancellation of the designation of Japan in the international registration.

Both fees are to be paid
directly to the International Bureau of the WIPO.